Kanye West - Getty - H 2016
Getty ImagesKanye West and Damon Dash get to share some territory in the Lower East Side. On Thursday, a New York federal judge granted them victory in a lawsuit over the 2015 film they created titled Loisaidas.
Loisaidas is Spanish slang for Manhattan, New York’s “lower east siders.” It’s also the name of a Latin band founded by Michael Medina.
Medina holds trademark registrations for “Loisaidas” and filed an infringement suit over the film, which consists of eight episodes between four and 12 minutes about a violent turf war for control of the Lower East Side’s drug business. Portions of the film are set to music, including one character who raps he’s “from Loisaidas.” There are other such references in the work including the first episode when “Loisaidas” fills the screen after a character is killed.
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The plaintiff contended the work was a music video, that the use of “Loisaidas” was arbitrary and that West and Dash were aware of the Latin band when deciding to use it. The defendants considered their work to be a film.
U.S. District Judge Katherine Forrest dismisses the complaint by applying the “Rogers test,” which emanates from an 1989 appellate decision over Federico Fellini’s 1986 film Ginger and Fred. To adhere to First Amendment values, judges in cases like these are to examine whether use of the mark has artistic relevance, and if it does, whether the work in question is explicitly misleading. Here, she applies the “Rogers test” at the very early motion to dismiss phase which addresses whether a plausible claim has been pled rather than a potential later phase testing factual allegations.
The judge says the Loisaidas film title “clearly has artistic relevance” and that Medina’s complaint “is devoid of concrete allegations that defendants attempted to suggest that plaintiff’s duo produced the work; to the contrary, as evidenced by Exhibit D to the operative complaint, materials promoting the film prominently informed the reader that it was ‘Executive Produced: Dame Dash & Kanye West.’”
Medina “is entitled to protect his duo’s trademark, but not by staking his claim to a pre-existing term and then attempting to remove all expressive, non-explicitly-misleading uses from public circulation,” Forrest writes.
West was represented by Brad Rose at Pryor Cashman, while Dash was represented by Natraj Bhushan at Turturro Law.
